DCT

1:23-cv-01488

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-01488, N.D. Ill., 03/10/2023
  • Venue Allegations: Venue is alleged to be proper based on Defendants’ targeting of sales to Illinois residents through interactive commercial websites, shipping products to the state, and causing substantial injury to Plaintiff in Illinois.
  • Core Dispute: Plaintiff alleges that a large group of unidentified online sellers are infringing its design patent for a wrap dispenser by selling counterfeit products on major e-commerce platforms.
  • Technical Context: The technology falls within the consumer market for kitchen organization products, specifically dispensers designed to hold and cut rolls of plastic wrap, aluminum foil, and wax paper.
  • Key Procedural History: The complaint initiates a lawsuit against 251 "Doe" defendants, a strategy often employed in cases targeting alleged networks of online counterfeiters whose identities are concealed. The complaint alleges these defendants form an "interrelated group" that sources products from a common manufacturer.

Case Timeline

Date Event
2022-01-25 D'630 Patent Application Filing Date
2022-12-06 D'630 Patent Issue Date
2023-03-10 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Design Patent No. D971,630 S - "Wrap Dispenser"

The Invention Explained

  • Problem Addressed: Design patents do not contain a background section detailing a technical problem. The complaint frames the issue as the need to protect a "unique and original design" from "substandard copies" and "Counterfeit Products" that confuse consumers (Compl. ¶18, ¶20, ¶29).
  • The Patented Solution: The patent claims "the ornamental design for a wrap dispenser, as shown and described" (D’630 Patent, Claim). The design consists of the specific visual appearance of a dispenser, characterized by a rectangular housing with three parallel slots on its top surface. Key ornamental features shown in the patent figures include the undulating, wavy shape of the cut-outs for each slot, the presence of a slide cutter on a rail for each slot, and the inclusion of the text "WAX," "FOIL," and "PLASTIC" adjacent to the respective slots (D’630 Patent, FIG. 1, FIG. 3).
  • Technical Importance: The value of the design is asserted to be aesthetic and commercial rather than purely technical. The complaint alleges that the product design has become a "symbol of excellence" and that the "consuming public recognizes Plaintiff's Products as originating with Plaintiff" (Compl. ¶21, ¶24).

Key Claims at a Glance

  • The complaint asserts the single claim of the D'630 design patent.
  • The single claim protects the overall ornamental appearance of the wrap dispenser, whose essential visual elements include:
    • A generally rectangular, box-like form factor.
    • Three parallel, elongated slots on the top surface.
    • A distinctive undulating or wavy cut-out shape defining the edge of each slot.
    • A slide cutter mechanism positioned on a track alongside each slot.
    • The specific textual labels "WAX," "FOIL," and "PLASTIC" presented as part of the top surface design.

III. The Accused Instrumentality

Product Identification

  • The accused products are identified as "Counterfeit Products" and "Unauthorized Products," specifically wrap dispensers sold by the Doe defendants (Compl. ¶4, ¶37).

Functionality and Market Context

  • The complaint alleges the accused products are "similar and substandard copies of Plaintiff's Products" that are sold through "Infringing Webstores" hosted on Amazon.com, ebay.com, and Walmart.com (Compl. ¶4, ¶18). The complaint further alleges that the accused products "bear striking similarities in design" to Plaintiff's product and appear to come from a "common source" or manufacturer (Compl. ¶38). These products are allegedly marketed in a way designed to "resemble authorized retail Internet stores selling the genuine Asserted Product" (Compl. ¶28).

IV. Analysis of Infringement Allegations

The complaint alleges that the Defendants' products infringe the ornamental design of the D’630 Patent (Compl. ¶44). However, it makes these allegations in a conclusory manner without providing claim charts or visual comparisons between the patented design and the accused products. The core infringement theory is that the accused products are "counterfeit" and possess a design that is strikingly similar to the one protected by the D’630 Patent (Compl. ¶28, ¶38).

An inconsistency appears in the pleadings, as paragraph 44 alleges infringement of the "Asserted Design Patent," while paragraph 46 alleges infringement of an "Asserted Utility Patent" (Compl. ¶44, ¶46). Only the design patent is identified and attached to the complaint filings.

No probative visual evidence provided in complaint.

The complaint does not provide sufficient detail for a claim-chart analysis.

  • Identified Points of Contention:
    • Evidentiary Question: The primary issue for the court will be establishing the actual appearance of the accused products. What evidence will Plaintiff produce to show that the products sold by each of the 251 Doe defendants embody a design substantially the same as the one claimed in the D'630 patent from the perspective of an ordinary observer?
    • Scope Question: The infringement analysis may turn on the scope of the patented design. The question will be whether the accused products copy the specific combination of ornamental features (e.g., the wavy slot shape, the specific slide cutter appearance, the text labels) or merely share functional features common to such dispensers.

V. Key Claim Terms for Construction

In design patent cases, construction focuses on the scope of the claimed design as a whole rather than on specific textual terms. The central issue is defining the boundary between protected ornamental features and unprotected functional elements.

  • The Term: "The ornamental design for a wrap dispenser."
  • Context and Importance: Practitioners may focus on the scope of this term because the Defendants could argue that any similarities between their products and the patented design are dictated by function (e.g., a box is needed to hold rolls, slots are needed to dispense wrap, a cutter is needed to cut it). The case will depend on which specific visual elements are deemed ornamental and therefore protected.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A broader interpretation would focus on the overall visual impression created by the unique combination of all claimed features—the specific wavy slots, the particular slide cutters, and the integrated text labels—arguing that this holistic appearance is what is protected (D’630 Patent, FIG. 1, FIG. 7).
    • Evidence for a Narrower Interpretation: A narrower interpretation would emphasize the elements disclaimed through the use of broken lines in the patent figures, which exclude the general shape of the bottom and back of the box from the claimed design (D’630 Patent, FIG. 2, Description). This could support an argument that only the specific top-surface aesthetics are protected, and any product that alters those specific features (e.g., uses straight slots or different labels) would not infringe.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendants are "personally contributing to, inducing and engaging in the sale of Counterfeit Products" (Compl. ¶5). The factual support for this claim rests on allegations that the defendants operate as an "interrelated group" and "work in active concert" with a common, unknown manufacturer to import and sell the infringing products (Compl. ¶6, ¶11, ¶12).
  • Willful Infringement: Willfulness is alleged based on the assertion that Defendants had "full knowledge of Plaintiff's ownership of the Asserted Patent" and that the infringement is "obvious and notorious" (Compl. ¶27, ¶47). The complaint does not plead specific facts showing when or how Defendants gained pre-suit knowledge of the patent, relying instead on the general characterization of Defendants as intentional "counterfeiters" (Compl. ¶2, ¶6).

VII. Analyst’s Conclusion: Key Questions for the Case

  1. A primary issue will be evidentiary and procedural: Can the Plaintiff successfully serve and establish personal jurisdiction over 251 unidentified foreign defendants, and can it produce evidence demonstrating that the specific products sold by each defendant are visually identical or substantially similar to the patented design?
  2. The central substantive question will be one of infringement scope: Assuming evidence of the accused products is presented, does the D'630 Patent's protection extend to the general configuration of a three-slot wrap dispenser with slide cutters, or is it narrowly limited to the exact aesthetic combination of the wavy-shaped slots, specific cutter design, and text labels shown in the patent's figures?
  3. A final question concerns joinder: Does the complaint allege sufficient facts to support its claim that the Doe defendants are an "interrelated group" (Compl. ¶6) whose actions arise from the "same transaction or occurrence" (Compl. ¶9), as required to properly join them in a single action?